37 CFR 1.105 - Requirements for information.

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There are 4 Updates appearing in the Federal Register for 37 CFR 1. View below or at eCFR (GPOAccess)
§ 1.105 Requirements for information.
(a)
(1) In the course of examining or treating a matter in a pending or abandoned application filed under 35 U.S.C. 111 or 371 (including a reissue application), in a patent, or in a reexamination proceeding, the examiner or other Office employee may require the submission, from individuals identified under § 1.56(c), or any assignee, of such information as may be reasonably necessary to properly examine or treat the matter, for example:
(i) Commercial databases: The existence of any particularly relevant commercial database known to any of the inventors that could be searched for a particular aspect of the invention.
(ii) Search: Whether a search of the prior art was made, and if so, what was searched.
(iii) Related information: A copy of any non-patent literature, published application, or patent (U.S. or foreign), by any of the inventors, that relates to the claimed invention.
(iv) Information used to draft application: A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used to draft the application.
(v) Information used in invention process: A copy of any non-patent literature, published application, or patent (U.S. or foreign) that was used in the invention process, such as by designing around or providing a solution to accomplish an invention result.
(vi) Improvements: Where the claimed invention is an improvement, identification of what is being improved.
(vii) In use: Identification of any use of the claimed invention known to any of the inventors at the time the application was filed notwithstanding the date of the use.
(viii) Technical information known to applicant. Technical information known to applicant concerning the related art, the disclosure, the claimed subject matter, other factual information pertinent to patentability, or concerning the accuracy of the examiner's stated interpretation of such items.
(2) Where an assignee has asserted its right to prosecute pursuant to § 3.71(a) of this chapter, matters such as paragraphs (a)(1)(i), (iii), and (vii) of this section may also be applied to such assignee.
(3) Requirements for factual information known to applicant may be presented in any appropriate manner, for example:
(i) A requirement for factual information;
(ii) Interrogatories in the form of specific questions seeking applicant's factual knowledge; or
(iii) Stipulations as to facts with which the applicant may agree or disagree.
(4) Any reply to a requirement for information pursuant to this section that states either that the information required to be submitted is unknown to or is not readily available to the party or parties from which it was requested may be accepted as a complete reply.
(b) The requirement for information of paragraph (a)(1) of this section may be included in an Office action, or sent separately.
(c) A reply, or a failure to reply, to a requirement for information under this section will be governed by §§ 1.135 and 1.136.
[65 FR 54671, Sept. 8, 2000, as amended at 69 FR 56542, Sept. 21, 2004; 72 FR 46841, Aug. 21, 2007; 74 FR 52690, Oct. 14, 2009]

Title 37 published on 2013-07-01

The following are only the Rules published in the Federal Register after the published date of Title 37.

For a complete list of all Rules, Proposed Rules, and Notices view the Rulemaking tab.

  • 2014-03-05; vol. 79 # 43 - Wednesday, March 5, 2014
    1. 79 FR 12384 - Changes to Continued Prosecution Application Practice
      GPO FDSys XML | Text
      DEPARTMENT OF COMMERCE, United States Patent and Trademark Office
      Interim rule.
      Effective Date: March 5, 2014. Comment Deadline Date: Written comments must be received on or before May 5, 2014.
      37 CFR Part 1

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United States Code
U.S. Code: Title 35 - PATENTS

Title 37 published on 2013-07-01

The following are ALL rules, proposed rules, and notices (chronologically) published in the Federal Register relating to 37 CFR 1 after this date.

  • 2014-03-12; vol. 79 # 48 - Wednesday, March 12, 2014
    1. 79 FR 13962 - Extension of Deadline for Requesting To Testify at the Public Hearings on the Proposed Changes To Require Identification of Attributable Owner
      GPO FDSys XML | Text
      DEPARTMENT OF COMMERCE, Patent and Trademark Office
      Notice of public hearings and extension of period for requesting to testify.
      Public Hearing Dates: The first public hearing will take place on March 13, 2014, from 1 p.m. Eastern Daylight Time (EDT) until 4 p.m. EDT, in Alexandria, Virginia. The second public hearing will take place on March 26, 2014, from 9 a.m. Pacific Daylight Time (PDT) until noon PDT, in San Francisco, California. Requests To Provide Oral Testimony: Those wishing to provide oral testimony must submit a request to do so in writing no later than March 12, 2014. Members of the public who wish to attend solely to observe need not submit a request to attend.
      37 CFR Part 1